Endemol Netherland B.V v. David Williams

Case No. D2010-1728

1. The Parties

The Respondent is David Williams of London, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <endemoltv.com> (the “Domain Name”) is registered with Register.it SpA (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 13, 2010. On October 13, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 14, 2010, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 21, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 10, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 11, 2010.

The Center appointed Andrea Jaeger-Lenz as the sole panelist in this matter on November 23, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

In accordance with the Rules, paragraph 11, the language of the proceeding is English as the language of the Registration Agreement was English.

On December 7, 2010, a Panel Order (Administrative Panel Order No. 1) was issued, in which the Complainant was requested to provide the evidence of its ownership of the trademark ENDEMOL, to provide more information regarding its relationship or link to the companies owning this trademark and to indicate whether any of these entities has given the Complainant an authorization to file a UDRP complaint. The due date for the filing of the Complainant’s submission was on December 12, 2010. The due date for the filing of comments, if any, by the Respondent was on December 15, 2010. Accordingly, the decision due date has been extended to December 21, 2010.

On December 10, 2010, the Complainant responded to this Panel Order and stated that Endemol Entertainment Productions GmbH, which is the owner of the United Kingdom trademark ENDEMOL, is now Endemol Deutschland. The Complainant also submitted that Endemol Investment BV (owner of the Community trademark ENDEMOL) and Endemol Entertainment B.V. (owner of the United States trademark ENDEMOL) have been fused into Endemol BV, which is a holding company above Endemol International BV. The Complainant generally states that it has been given permission to act on behalf of these entities.

The Respondent did not submit any comments or file a reply to the Complainant’s submission.

4. Factual Background

The Complainant is part of a group of international companies including Endemol Entertainment Productions GmbH and Endemol Investment BV (the “Endemol Group”). The Endemol Group is a television production company based in the Netherlands and founded in 1994. The Complainant’s field of activity besides television production is entertainment programming as well as digital productions.

The Complainant and/or the Endemol Group own trademark registrations for the term ENDEMOL (the “trademark”) in numerous countries worldwide, particularly in the United Kingdom (trademark no. 1556694, registration date: August 18, 1995, registrant: Endemol Entertainment Productions GmbH), in the United States (trademark no. 2088476, registration date: August 19, 1997, registrant: Endemol Entertainment B.V. Corporation Netherlands) and as a Community Trade Mark (CTM no. 004905147, registration date May 2, 2007, registrant: Endemol Investment B.V.). The trademark is registered in classes 9 and 41 inter alia.

The Domain Name <endemoltv.com> was registered by the Respondent on March 11, 2010. The Complainant has submitted evidence that the website associated with the Domain Name is inactive.

5. Parties’ Contentions

A. Complainant

Being part of the Endemol Group the Complainant identifies itself as part of a global leader in entertainment programming which has established itself as the largest independent TV, cross media platform and digital production company in the world. The company has been producing nearly 40,000 hours of premium entertainment for approximately 400 broadcasters and cross media platform around the world. The Complainant states that the Endemol Group comprises a global network of 80 companies in 26 countries and that its credits include international blockbusters like “Big Brother”, “Deal or No Deal”, “Extreme Makeover: Home Edition”, “Star Academy” and “Wipeout”.

In April 2010 the Complainant became aware of the registration of the Domain Name. It was being used for an email address from which a scam email was sent out. A glamour model in the United Kingdom, was contacted by a person using the email address [ ]@endemoltv.com who represented himself as an employee of “Endemol Productions”. This person apparently told the glamour model that a reality or documentary project about UK models and their professional and personal business was being planned. The sender claimed that this project was in the stage of development but not confirmed yet. After having received this email, the glamour model contacted the Complainant.

Since neither the sender of the above-indicated email message nor David Williams (the registrant of the Domain Name) were working for the Endemol Group and since the Complainant did not know about or recognize the project mentioned in the mentioned email, the Complainant became suspicious and sent an email message to [ ]@endemoltv.com. The Complainant asked the sender to confirm his employee status, which production he was working on and who authorized the research. The Complainant did not receive any response.

Before filing this Complaint, the Complainant tried to contact the Respondent through a cease and desist letter, in an attempt to obtain the voluntary transfer of the Domain Name. On April 19, 2010, the Complainant sent out this letter via email to the domain administrator, Namesco Limited ,asking them to forward the letter to the registrant of <endemoltv.com>.

As the Respondent was claiming to be an employee of the Complainant, the domain administrator was neither willing nor able to judge whether the Complainant or the registrant of the Domain Name were telling the truth and asked the Complainant to contact the Center. Subsequently the Complainant decided to proceed with a UDRP complaint in order to have the Domain Name transferred.

The Complainant states that the Domain Name is confusingly similar to the ENDEMOL trademark, in which the Complainant has rights and that the Domain Name exploits the good will and the image of the trademark.

The Complainant asserts that the Respondent has no rights or legitimate interests in the Domain Name. No license or authorization of any other kind has been given by the Complainant to the Respondent to use the trademark ENDEMOL and there has never been a business relationship with the Complainant.

The Complainant also contends that the Respondent has registered and is using the Domain Name in bad faith. Even though the Domain Name has not been connected to an active website, the Respondent used the Domain Name as part of an email address from which a scam email has been sent out. The Complainant asserts that the Respondent has used the Domain Name for misleading activities.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. The Complainant’s contentions are therefore not contested.

6. Discussion and Findings

The Complainant must provide evidence of all the elements of paragraph 4(a) of the Policy. As the decision to transfer or cancel a domain name may have serious consequences for the domain name holder, the evidence should be sufficient in all respects to support such a decision. The absence of a Response from the Respondent, as in this case, does not discharge the Panel from its duty to establish that the evidence is sufficient.

The Complainant has provided trademark registration certificates of registration in various countries by the Endemol Group. The Complainant is part of the Endemol Group and the Complaint is based on the mentioned trademark registrations.

A. Identical or Confusingly Similar

The Complainant has to prove that it has rights in trademarks which are identical or confusingly similar to the Domain Name. In this regard, the Panel notes that the Complainant itself is not owner of any of the trademarks on which the Complaint is based, nor did the Complainant’s representative present an authorization from any of the relevant trademark owning companies in the Endemol Group. Thus, the Complainant was requested to provide evidence of its ownership of the trademark ENDEMOL, provide more information regarding its relationship or link to Endemol Entertainment Productions GmbH, Endemol Investment BV, and Endemol Entertainment B.V., and to indicate whether any of these entities has given the Complainant authorization to file a UDRP Complaint on its behalf. In response to this, the Complainant’s representative provided an excerpt for a CTM ENDEMOL belonging to Endemol Investment BV, and indicated that Endemol Entertainment Productions GmbH is now Endemol Deutschland (without giving the company form specification), that this company has given the Complainant the permission to act, that Endemol Invesment BV (owner of CTM ENDEMOL) and Endemol Entertainment BV (owner of US trademark ENDEMOL) are fused into Endemol BV which is a holding company above Endemol International BV, and globally claiming that the entities have given Complainant permission to act. While the Panel considers that the Complainant’s representative’s submissions leave a lot to be desired, the Panel is prepared to infer from the submitted materials, for the purposes of this UDRP proceeding, that the Complainant has rights in a trademark ENDEMOL.

The defining and dominant part of the Domain Name is identical with the trademark in which the Complainant has rights while the suffix “tv” is neither able to eliminate or relativize this accordance nor to alter the underlying trademark of the Complainant. Since the Complainant is a television production company the suffix has a rather intensifying effect, making the public believe that the Respondent’s Domain Name is operated by a company of the Endemol Group.

The Panel’s finding is in line with prior UDRP jurisprudence (ENDEMOL Entertainment UK Plc v. Guido Scherpenhuyzen,WIPO Case No. DTV2001-0023), in which the panel assumed confusing similarity between the domain names <endemoluk.tv> and/or <endemolentertainment.tv> and the Complainant’s trademarks. It is also in line with N.C.P. Marketing Group, Inc. v. Entredomains,WIPO Case No. D2000-0387, in which the panel describes the suffix “tv” as “a generic noun or common descriptive term or adjective following a word or letter mark”, with which a respondent cannot “create a new or different mark in which it has rights or legitimate interests” . The panel determined in that decision that <taebotv.com> and <tae-botv.com> are confusingly similar to TAE BO.

The addition of the top-level domain (TLD) ”.com” does not alter the general impression of the Domain Name and its similarity to the trademarks.

The Complainant has thus fulfilled paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Respondent does not have any license or permission to use the trademark ENDEMOL in any way, in particular not as a Domain Name. Given the circumstances of this case, no other legitimate interest is apparent in this case. Thus, in accordance with prior UDRP jurisprudence (Guerlain S.A. v. Peikang,
WIPO Case No. D2000-0055, where the panel states that “in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by Respondent”), the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.

The Complainant has fulfilled paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Domain Name was used for an email address from which a scam email was sent.on March, 22, 2010. In this email, the author literally claimed to “work for Endemol Productions”. He also claimed to be responsible for creating storylines for Endemol’s autumn season in this email. In the Panel’s opinion, it is obvious that the Respondent must have known the Complainant’s trademark at the time he registered the Domain Name. The Panel concurs with earlier panel decisions (e.g. ENDEMOL Entertainment UK Plc v.Guido Scherpenhuyzen,WIPO Case No. DTV2001-0023) that ENDEMOL is a well-known brand.

The Respondent acted in a misleading, confusing and tarnishing way. Even though it is not clearly evident what the author of the March 22, 2010 email tried to achieve eventually by sending the scam email, he at least tried to create the impression that he was working for the Endemol Group. He actively pretended to be an employee of “Endemol Productions”. He claimed untruthfully to be responsible for the creation of new storylines for the Complainant. That way he tried to awaken attention and interest for his own purposes. For the object to get a reply from the scam emailed person he exploited the brand awareness of the Complainant and the goodwill related to it.

As the Respondent must have known about the Complainant’s trademark and the associated legal rights and as the Respondent was trying to exploit the brand awareness for its own purposes – whatever kind of purposes these were – the Panel finds that the Domain Name was registered and used in bad faith by the Respondent.

The Complainant has fulfilled paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <endemoltv.com> be transferred to the Complainant.